WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Caesars World, Inc. v. Universalinteractives

Case No. D2001-0951

 

1. The Parties

The Complainant in this Administrative Proceeding is Caesars World, Inc. ("Caesars"), a Florida corporation doing business at 3930 Howard Hughes Parkway, 4th Floor, Las Vegas, Nevada 89109, USA.

The Respondent/domain name holder is Universalinteractives, Genesis Building, Grand Turk, Grand Turk, P.O. Box 500, Cayman Islands.

 

2. The Domain Name and Registrar

The disputed domain name is <caesarspalaceonlinecasino.com>. The Registrar of this domain name is Tucows, Inc. of Toronto, Ontario, Canada.

By registering the subject domain name with the Registrar, the Respondent agrees to the resolution of disputes pursuant to the Policy and Rules.

 

3. Procedural History

This is a mandatory Administrative Proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Administrative Panel consisting of one member was appointed on September 21, 2001, by WIPO.

Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on July 25, 2001, by email and on July 26, 2001, by hardcopy. The Center dispatched to the Registrar a Request for Registrar Verification on July 26, 2001. On August 17, 2001, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. On September 10, 2001, the Center issued a Notification of Respondent Default.

An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.

Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.

 

4. Factual Background

The following information is derived from the Complainantís material.

The Complainant provides gaming, hotel and entertainment services through its operation of the CAESARS PALACE casino and hotel (the "Casino"), located in Las Vegas, Nevada, USA.

The Complainant own several United States Patent and Trademark Office registrations for the mark CAESARS PALACE (the "Mark"), and the Mark is used to designate and promote the Complainant's goods and services. The Mark is firmly associated with the Complainant.

The CAESARS PALACE casino and hotel opened on August 5, 1966. On average, approximately 1,500,000 people stay at the casino and hotel each year. Millions more visit without spending the night. As a result, the CAESARS PALACE casino and hotel has enjoyed and continues to enjoy exceptional success. The casino also has received a high level of publicity and commendation from various sources.

In addition to publicity generated by the media, the Complainant has spent approximately $96,012,507 in connection with advertising and promoting its CAESARS PALACE casino and hotel during the period 1995 to 2000.

The Complainant has had a presence on the Internet in the form of a web site devoted to the Casino at "www.caesars.com/palace/default.html" since June 1996. An Internet user who types "www.caesarspalace.com" on the browser is also taken to that website. The web site continuously has displayed the CAESARS PALACE Mark since that time.

In the year 2000, 2,018,843 visitors visited the Complainantís website, with an average of 168,237 visitors per month. In January and February 2001, 487,474 visitors visited the site, with an average of 243,737 visitors per month.

Since at least as early as 1972, the Caesars Palace casino and hotel has hosted numerous prominent sports events that have been televised, usually on a nationwide basis, in the United States. These televised events have augmented greatly the widespread recognition of the CAESARS PALACE mark.

The CAESARS PALACE casino and hotel is mentioned frequently on television in the United States. For example, from January 1, 1999, there were 382 such mentions. They increased the recognition of the mark.

As a result of the Complainantís efforts, its Mark has gained wide recognition and has become well-known.

The Complainant owns a number of U.S. federal trademark registrations for the CAESARS PALACE Mark. Set forth below is a table summarizing those registrations:

Mark

Reg. No.

Goods and Services

Filing Date

Registration Date

CAESARS PALACE

907,693

Hotel and restaurant services in Class 42; Nightclub entertainment services featuring music, dancing and comedy, and casino services in Class 41

June 12, 1968

February 9, 1971

CAESARS PALACE
(Stylized)

907,696

Hotel and restaurant services in Class 42; Night club entertainment services, featuring music, dancing and comedy, and casino services in Class 41

June 12, 1968

February 9, 1971

CAESARS PALACE

963,820

Providing baby sitting, beauty salon and barber shop services in Class 42; Providing convention facilities in Class 35; Providing travel agency services in Class 39; Providing health club and tennis instruction services in Class 41

December 15, 1971

July 10, 1973

CAESARS PALACE
(Stylized)

1,004,058

Providing baby sitting, beauty salon and barber shop services in Class 42; Providing convention facilities in Class 35; Providing travel agency services in Class 39; Providing health club and tennis instruction services in Class 41

December 15, 1971

February 4, 1975

CAESARS PALACE

951,262

Dice and playing cards in Class 22

February 10, 1972

January 23, 1973

CAESARS PALACE

963,656

Magazines and instructional booklets in Class 38

April 14, 1972

July 10, 1973

CAESARS PALACE
(Stylized)

968,212

Magazines and instructional booklets in Class 38

April 14, 1972

September 11, 1973

CAESARS PALACE

1,091,551

Entertainment services, namely, promoting sports events in Class 41

September 15, 1977

May 16, 1978

CAESARS PALACE
(Stylized)

1,090,494

Entertainment services, namely, promoting sports events in Class 41

September 15, 1977

May 2, 1978

CAESARS PALACE
(Stylized)

1,158,035

Playing cards in Class 16; Dice in Class 28

February 23, 1979

June 23, 1981

CAESARS PALACE and Design

1,167,723

Entertainment services, namely, producing television programs and promoting sport events in Class 41

April 30, 1979

September 1, 1981

All the registered marks in the above table are incontestable. They were registered prior to the Respondentís registration of the subject domain name.

The Complainant also has many registrations for the CAESARS PALACE mark throughout the world, including registrations in Australia, the Bahamas, the Benelux countries, Canada, China, France, Germany, Greece, Hong Kong, Italy, Jamaica, Japan, Mexico, Malaysia, Panama, Singapore, Spain, South Africa, South Korea, Taiwan, Thailand, Turkey, the United Kingdom and Venezuela.

The Respondent registered the subject domain name on December 18, 2000. It is not affiliated with the Complainant and has not been authorized by the Complainant to use its marks.

The Respondent uses the subject domain name for a website devoted to gambling.

The Respondent is also the registrant of another gambling site at <vegasbettinglines.com>. The page from that site on which members log in states: "Your membership at Vegas Betting Lines also allows you to play at "http://www.caesarspalaceonlinecasino.com" and yes with the same account." An Internet user who clicks on the domain name in that statement is taken to the Respondentís site at the subject domain name.

On July 11, 2001, the Complainantís attorney sent the Respondent a letter demanding that it transfer the subject domain name to the Complainant and cease using the Complainantís marks by July 23, 2001. The Respondent did not reply.

The Respondent made no submission in this proceeding.

 

5. Partiesí Contentions

A. Complainant

The Complainant relies on the registrations of its Mark CAESARS PALACE and the use to which it has been put in conjunction with its casino and hotel and says that the subject domain name is confusingly similar.

It is contended that the Respondent does not have a legitimate interest in the subject domain name because the:

"Respondent can demonstrate no legitimate interest in the [subject domain name. Respondent registered the Domain Name after Complainant had established rights in its CAESARS PALACE Mark through extensive use. See Fiber-Shield Industries, Inc. v. Fiber Shield LTD, NAF 1000092054. Where, as here, Complainantís CAESARS PALACE Mark is so well known and recognized, there can be no legitimate use by Respondent. Guerlain S.A. v. PeiKang, WIPO D2000-0055."

The Complainant relies on the quoted passage to show bad faith. It contends that the absence of a relationship with the Complainant and the fact that the Respondent is not commonly known by the name, illustrate bad faith. Its failure to respond to the Complainantís attorneyís letter and its conduct in profiting from the subject domain name also are said to establish bad faith.

B. Respondent

The Respondent made no submission.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;

(ii) the Respondent has no legitimate interest in respect of the domain name;

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;

(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on it or a location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The Complainant refers to a number of domain name dispute decisions. While these are neither controlling nor binding on this Administrative Panel, they can be of assistance.

The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

It is clear that the Complainant has rights to the words "ceasars palace". It is well known by that name in the context of operating a casino and hotel. The subject domain name combines the Complainantís mark and one of its principal activities. Users of the site clearly would believe that they were linking to the Complainant. There is no indication to the contrary at the web site.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Respondentís Legitimate Interest

The Complainant makes no or no clear submission concerning the Respondentís lack of legitimate interest. The statement that the "Ö Respondent can demonstrate no legitimate interest in the Domain Name" fails to recognize that the obligation to establish a lack of legitimate interest is on the Complainant.

While the Respondent carries on commercial activities associated with the subject domain name, the abuse of a trademark to do so is not legitimate in the context of the Policy. The fact that it is not known by the name also is relevant. These facts support an inference that the Respondent does not have a legitimate interest in the subject domain name. It has done nothing to supplant that inference.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Bad Faith

The fact that a Respondent has registered a domain name in which it has no legitimate interest and which is identical or confusingly similar to the rights of a Complainant does not lead necessarily to the conclusion that the domain name was registered and used in bad faith, but the information which leads to those conclusions may be relevant to a consideration of bad faith.

The Respondentís registration and use of the subject domain name appears to be a blatant attempt to capitalize on the Complainantís Mark and the notoriety it has established concerning that Mark. The Respondent has offered no information to supplant the appearance.

In this case, the commercial activities of the Respondent fit squarely within a circumstance in which the Policy dictates that an implication of evidence of bad faith can arise. The Respondent not only uses the subject domain name to attract customers, it uses another linked site for the same purpose. No explanation has been provided for this conduct.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

 

7. Decision

Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case. The Complainant asks that the subject domain name be transferred to it. The Administrative Panel so orders.

 


 

Edward C. Chiasson, Q.C.
Sole Panelist

Dated: October 3, 2001